1. Conflicts of Interest in IP: Particularities of IP Practice
Michael Erdle, Deeth Williams Wall LLP

2. IP – Specific Issues
Who is the “client”? IP practice areas Business vs. legal conflicts Dealing with conflicts

3. Who is the “client”? Agency practice Corporations
Foreign associate or their client
Domestic law firm or their client
Corporations
Related parties (affiliates and subsidiaries)
Shareholders, directors, officers
Parties with related interests
Owner and IP creator (e.g. inventor, author)
Publishers, advertising agencies, designers, etc.
Licensor and licensee

4. Prosecution Practice Searches Opinions Applications Prosecution
Search discloses IP owned by another client
Opinions
Can you give an opinion (positive or negative) that refers to another client’s IP rights?
Applications
Using knowledge gained on other matters
Prosecution
Office action cites another client mark or patent – can you argue over or around it?

5. Commercial Practice Licensing Issues M&A Practice
Negotiating terms for competing clients in unrelated matters
M&A Practice
Lawyer/firm may be involved only in one aspect of the deal – do other aspects of transaction create a conflict?

6. Litigation Practice Acting against current or former client
Action related to current or prior retainer
Patent or TM that firm prosecuted
Transaction that firm advised on
Unrelated matter
Unrelated practice areas
“Quasi-client” or related parties
E.g. acting for company on a patent application and acting against inventor on wrongful dismissal

7. Business vs. Legal Conflicts
Acting for competitors on unrelated matters
Client may insist firm never act for a competitor
Client may be more sensitive about some areas of practice or specific competitors

8. Business vs. Legal Conflicts
When does general knowledge or technical expertise become a conflict?
Competing technologies
Industry knowledge

9. Dealing with Conflicts
Retainer Agreements
Limited retainers
Joint retainers
“Non-retainers”

10. Dealing with Conflicts
Obligation to disclose potential conflicts to new clients Obligation to disclose new retainer to existing client Ability to disclose limited by confidentiality obligations

11. Dealing with Conflicts
General waiver of business conflicts
Acknowledge the firm may act for multiple clients in same field (direct and indirect competitors)
Specific waivers of business/legal conflicts
May act against client on specific matter
Waivers subject to over-riding confidentiality obligations

12. Dealing with Conflicts
Problems with internal wall / “cone of silence”
Information shared before aware of conflict
Inability to assign work to most qualified person
Addresses duty of confidence, but not duty of loyalty
Addresses legal conflict, but not business conflict